PCT/A/28/2

page 1

WIPO / / E
PCT/A/28/2
ORIGINAL: English
DATE: January 28, 2000
WORLD INTELLECTUAL PROPERTY ORGANIZATION
GENEVA

international patent cooperation union
(pct union)

assembly

Twenty-Eighth (16th Extraordinary) Session

Geneva, March 13 to 17, 2000

PROPOSED AMENDMENTS OF THE PCT REGULATIONS AND
MODIFICATIONS OF THE PCT ADMINISTRATIVE INSTRUCTIONS,
RELATING TO THE DRAFT PATENT LAW TREATY

Document prepared by the International Bureau of WIPO

INTRODUCTION

1.This document[1] contains proposals for amendments of the Regulations under the PCT and modifications of the Administrative Instructions under the PCT.[2] While the proposals concern directly the processing of international applications under the PCT, they are made with particular regard to the draft Patent Law Treaty (PLT) that has been under development by the WIPO Standing Committee on the Law of Patents (SCP) and will be submitted as the basic proposal to the Diplomatic Conference for the Adoption of the Patent Law Treaty (“PLT Diplomatic Conference”) to be held in Geneva from May 11 to June 2, 2000.[3]

2.The main purpose of the proposals in this document, so far as the PCT procedure is concerned, is to provide the possibility for applicants, when filing an international application, to satisfy in a simplified way a number of requirements of national[4] law which presently have to be met when the application enters the national phase of processing. In particular, applicants would have the possibility of satisfying certain requirements set out in Rule 51bis, as proposed to be amended, by way of making one or more of four declarations in the request, as provided for in proposed amendments of Rule 4, which must use standardized wordings prescribed in the Administrative Instructions. Those declarations relate to the identity of the inventor, the applicant’s entitlement to apply for and be granted a patent, the applicant’s entitlement to claim priority in certain circumstances, and a declaration of inventorship for the purposes of the designation of the United States of America. A standardized wording is also provided for a declaration as to non-prejudicial disclosures and exceptions to lack of novelty.

3.The draft PLT is designed to streamline and harmonize the procedural and administrative requirements of national patent Offices for the filing and processing of national patent applications. Those procedural and administrative requirements include the form and contents of national patent applications, the type of translations of documents which an applicant may be required to provide to an Office in the course of processing an application, and the evidence which an applicant may be required to provide to an Office in the course of processing an application.

4.Although the draft PLT is applicable primarily to national patent applications, it incorporates by reference the standards prescribed by the PCT as to the form and contents of international applications. The proposals in this document are in line with the goal of the draft PLT to streamline administrative requirements, and the proposals take into account discussions by the SCP of related matters in connection with the draft PLT.

5.The proposed amendments of the Regulations and modifications of the Administrative Instructions are contained, respectively, in Annexes I and II to this document. Proposed additions and deletions are indicated, respectively, by underlining and striking through the text concerned. In a small number of cases, text the need for which, or the precise wording of which, is in doubt is included in square brackets. Parts of affected Rules which are not proposed to be amended are also included where they are particularly relevant to the provisions proposed to be amended; if they are not included, they are replaced by the indication “[No change]”. Comments are included, immediately following the text of the provisions concerned, where it seems that they would be helpful. Draft texts for inclusion in the Notes to the request form are also included in order to explain how the declarations should be completed in practice.

6.The proposed modifications of the Administrative Instructions are included in this document (as Annex II) for the purposes of consultation under Rule 89.2(b).

7.The proposals are based on those considered by the PCT Committee for Administrative and Legal Matters (“PCT/CAL”)[5] (in documents PCT/CAL/7/2 to 5) at its seventh session held in Geneva from November 29 to December 3, 1999, revised as necessary in the light of the conclusions and discussion by that Committee (see the Committee’s report in documentPCT/CAL/7/6). In addition to the changes agreed by PCT/CAL (as set out in Annexes III and IV to document PCT/CAL/7/6), a number of further drafting changes to the proposals have been made by the International Bureau, notably in the numbering of certain provisions and in the wording of proposed Rule 4.17 (which appears as proposed Rules 4.17 to 4.19 in Annex III to document PCT/CAL/7/6) and proposed amended Rule 51bis.2 (which appears as proposed Rule 51bis.1(a-bis), (a-ter) and (a-quater) in Annex III to documentPCT/CAL/7/6). Those further drafting changes are mentioned in the comments following the provisions concerned in Annex I to this document.

8.A more detailed discussion of the proposals is given in the following paragraphs, as follows:

(i)documents and evidence which may be required under national law;

(ii)contents of the international application;

(iii)correction and addition of declarations;

(iv)communication and publication of declarations;

(v)certified translations of international applications;

(vi)translations of priority documents;

(vii)opportunity to comply with national requirements;

(viii)indications concerning registered applicants and agents.

DOCUMENTS AND EVIDENCE WHICH MAY BE REQUIRED
UNDER NATIONAL LAW

9.Article 27(1) provides: “No national law shall require compliance with requirements relating to the form or contents of the international application different from or additional to those which are provided for in this Treaty and the Regulations.” Article 27(2)(ii) specifically enables the national law to require, once the processing of the international application has started in the designated Office, the furnishing of “documents not part of the international application but which constitute proof of allegations or statements made in that application.” In relation to substantive matters, as distinct from matters of form or contents, Article 27(6) provides: “The national law may require that the applicant furnish evidence in respect of any substantive condition of patentability prescribed by such law.” The relevant provisions of the Regulations for the purposes of Article 27 are found in present Rule 51bis.

10.Present Rule 51bis.1(a) lists a number of matters relating to which the applicant may be required to furnish documents or evidence under the national law applicable by the designated Office. Although that list is not exhaustive, it provides clarity for both applicants and designated Offices that such items may be required to be furnished by the applicant under the national law applicable by the designated Office.

11.It is proposed to amend Rule 51bis.1(a) to clarify the items listed, consistently with Article 27 and with national laws. The chapeau in the Rule is proposed to be amended to refer to Article 27 in general. In addition, several items listed in the Rule are proposed to be re-worded, certain items are proposed to be combined, and one item is proposed to be added, in order to provide clarity as to the substance of what an applicant may be required to furnish and to provide consistency with the amendments proposed to Rule 4 (see below). The matters listed in items (i) to (vi) of proposed amended Rule 51bis.1(a) relating to which a designated Office may require further evidence or additional documents include: the identity of the inventor; the applicant’s entitlement to apply for or be granted a patent; the applicant’s entitlement to claim priority where that applicant is not the applicant who filed the earlier application the priority of which is claimed or where the applicant’s name has changed since the date on which the earlier application was filed; (in certain cases) an oath or declaration of inventorship; non-prejudicial disclosures or exceptions to lack of novelty; and (in certain cases) any government license rights in the invention. Only the item relating to government license rights is entirely new (Rule 51bis.1(a)(vi)).

12.Draft PLT Article 6(6) provides that a Contracting Party may require that evidence be filed with its Office in the course of processing the application only where that Office may reasonably doubt the veracity of any matter contained in the application. It is similarly proposed to amend Rule 51bis to conform to those proposals in the draft PLT regarding the circumstances under which a designated Office may require an applicant to furnish evidence or additional documents regarding statements made in the international application.

13.Consistent with the approach taken in the draft PLT, it is proposed to limit the ability of a designated Office to require evidence from an applicant under the PCT where the applicant has included a declaration under proposed amended Rule 4.17(i) to (iv). Such a limitation would apply regardless of whether the applicant has filed the declaration together with the international application or furnished the declaration under proposed new Rule 26ter after the filing of the international application. Such a limitation is also proposed where the applicant has submitted directly to a designated Office a declaration in accordance with proposed amended Rule 4.17, relating to events which occurred prior to the international filing date. However, where the designated Office has reasonable doubts as to the veracity of the declaration submitted by the applicant, the designated Office may require the applicant to furnish evidence or additional documents.

14.It is similarly proposed to limit the ability of a designated Office to require the applicant to furnish evidence or additional documents regarding the identity of an inventor where indications regarding the inventor have already been furnished in the request in accordance with Rule 4.6, unless the designated Office has reasonable doubts as to the veracity of the indications.

15.A designated Office would not be subject to such a limitation for declarations referred to in Rule 4.17(v) as to non-prejudicial disclosures or exceptions to lack of novelty, noting that such matters involve substantive conditions of patentability.

16.Since proposed Rule 51bis.2(a) may not be compatible with all national laws applicable by designated Offices, it is proposed to provide the ability for Offices to make a transitional reservation regarding its applicability, as provided in proposed Rule 51bis.2(c).

17.The draft PLT sets forth certain maximum requirements for national patent applications which national patent Offices may impose on applicants. In setting those requirements, the draft PLT expressly relies on the requirements which may be imposed under the PCT. Specifically, draft PLT Article 6(1) provides:

“(1)[Form or Contents of Application] Except where otherwise provided for by this Treaty or prescribed in the Regulations, and subject to paragraph (6), no Contracting Party shall require compliance with any requirement relating to the form or contents of an application different from or additional to:

(i)the requirements relating to form or contents which are provided for in respect of international applications under the Patent Cooperation Treaty;

(ii)the requirements relating to form or contents compliance with which, under the Patent Cooperation Treaty, may be required by the Office of, or acting for, any Contracting State of that Treaty once the processing or examination of an international application, as referred to in Article 23 or Article 40 of the said Treaty, has started;

(iii)any further requirements prescribed in the Regulations.”

18.The requirements relating to the form or contents of an international application which a designated Office may impose under the PCT are thus incorporated by reference under the draft PLT as permissible requirements which national Offices may impose in respect of national applications. The requirements concerned include, in particular, those which apply under Rule 51bis.

CONTENTS OF THE INTERNATIONAL APPLICATION:
DECLARATIONS USING STANDARDIZED WORDING

19.At present, a PCT applicant has the opportunity to satisfy the national requirements which are expressly set forth in Rule 51bis.1(a) only upon or after entry of the international application into the national phase of the PCT procedure, that is, when the designated Office begins to process it. The proposals contained in this document are designed to afford applicants the possibility of satisfying those requirements at the time of filing an international application or later during the international phase.

20.It is proposed to permit applicants to include in the request certain declarations corresponding to the matters set out in Rule 51bis.1(a)(i) to (v), relating to which designated Offices may require evidence or documents. In particular, the proposals would provide applicants with the possibility in certain circumstances of making, in the request, declarations using standardized wording set out in the Administrative Instructions as to: the identity of the inventor; the applicant’s entitlement to apply for and be granted a patent; the applicant’s entitlement to claim priority of an earlier application; an oath or declaration as to inventorship; and non-prejudicial disclosures or exceptions to lack of novelty (see, respectively, proposed Rules 4.17(i) to (v) and the declarations set out in proposed Sections211 to 215).

21.The declarations referred to in Rule 4.17 could only be made in cases where the circumstances are capable of being covered by the standardized wording that is prescribed; in other cases, the applicant would not be able to include such declarations and may be required to furnish documentary evidence to designated Offices in the national phase, as provided for by Article 27 and Rule 51bis.1. Where a declaration using standardized wording is made, however (other than a declaration as to non-prejudicial disclosures or exceptions to lack of novelty), no designated Office would be entitled, in the national phase, to require the applicant to furnish further evidence as to the matter covered by the declaration, except where there is a reasonable doubt as to the veracity of the declaration (see proposed Rule 51bis.2). Thus, where the standardized wordings are appropriate to the circumstances, applicants could include the necessary declarations in the request at the time of filing the international application and avoid having to file with a number of designated Offices, when entering the national phase, multiple similar declarations covering the matters concerned.

22.It is thus proposed to amend Rule 4.1(c) to provide that the request may contain declarations as provided in Rule 4.17(i) to (v), which relate to the matters referred to in Rule51bis.1(a)(i) to (v), respectively. All of those declarations are subject to the requirement that they conform to the standardized wording set out in Sections 211 to 215. In addition, an oath or declaration of inventorship made for the purposes of the designation of the United States of America under Rule 4.17(iv) and Section 214 would have to be signed by the person making it if that person did not sign the request.

23.The proposals also address related issues concerning the correction and addition to the request of such declarations, and their publication and/or communication to designated Offices.

CORRECTION AND ADDITION OF DECLARATIONS

24.In general, it is proposed under Rule 26ter.1 to permit applicants to correct or add to the request any declaration referred to in Rule 4.17 until the expiration of 16 months from the priority date (or even later, provided that the declaration is received by the International Bureau before the technical preparations for international publication have been completed).

25.Pursuant to proposed Section 214, a declaration of inventorship referred to in Rule4.17(iv) which is corrected or added under Rule 26ter.1 would have to be signed by the person concerned.

26.Proposed Rule 26ter.2(a) provides that the receiving Office or the International Bureau may invite the applicant to correct any declaration referred to in Rule 4.17 that is not worded or signed as required. The receiving Office and the International Bureau would not, however, have to check such a declaration for its substance or its completeness; such matters would be ones for designated Offices in the national phase. Pursuant to proposed Rule 26ter.2(b), where the International Bureau receives a correction or addition of a declaration outside the time limit under Rule 26ter.1, the International Bureau would notify the applicant accordingly.

27.Proposed Section 433 of the Administrative Instructions sets out procedures to be followed pursuant to proposed Rule 26ter.2(b). Specifically, it provides that the International Bureau shall return a declaration received outside the time limit to the applicant and inform the applicant that the declaration should be submitted to the designated Office or Offices concerned. It is envisaged that, when declarations are received and processed in electronic form, the International Bureau may be in a position to forward declarations submitted after the time limit to the designated Office or Offices concerned rather than reject them, and a corresponding modification of the Section could then be considered.

COMMUNICATION AND PUBLICATION OF DECLARATIONS

28.The declarations provided for under Rule 4.17 would provide applicants the possibility of satisfying, in the international phase, certain national law requirements set forth in Rule51bis.1(a). Thus, where such a declaration is included in the request, the designated Offices concerned must be informed.

29.In order to inform designated Offices that a declaration under Rule 4.17 has been included in the request, it is proposed that such declaration be communicated by the International Bureau to the designated Offices concerned and also be mentioned in the published pamphlet (see Rules 47.1(a-ter) and 48.2(b)(iv)). A declaration regarding non-prejudicial disclosures or exceptions to lack of novelty (see Rule 4.17(v)) would be published as part of the pamphlet (see Rule 48.2(a)(x)) and would not be separately communicated.

CERTIFIED TRANSLATIONS OF INTERNATIONAL APPLICATIONS

30.Draft PLT Article 6(3) provides that a Contracting Party may require a translation of any part of an application that is not in a language accepted by its Office. However, draft PLT Article 6(6) provides that a Contracting Party may require that evidence be filed with its Office in the course of the processing of the application only where that Office may reasonably doubt the accuracy of the translation. Under the draft PLT, such evidence could include a certification of the translation.

31.Draft PLT Article 6(7) also provides that, where evidence is required from an applicant, the national Office shall notify the applicant, giving an opportunity to comply with any such requirement, and to make observations, within two months from the date of the notification.

32.At present under the PCT, Rule 51bis.2(b) provides that the national law applicable by the designated Office may require that the applicant, upon invitation by the designated Office, furnish a certification of the translation of the international application if the designated Office deems such certification to be necessary, and that the designated Office must give the applicant an opportunity to comply with the requirement within a time limit which shall be reasonable under the circumstances and shall be fixed in the invitation.